Protection of 
Industrial Property 

Monopolies Granted 
By Governments 



. BY 



H^'a/tOULMIN, Jr. 

J. D., F. S. S., F. E. S. 
Member of the Ohio Bar, Etc. 



REPRINTED FROM THE VIRGINIA LAW REVIEW 
December, 1915. 
VOL. Ill, No. 3 






COPYRIGHT, 1915, 
By THE VIRGINIA LAW REVIEW ASSOCIATION. 



M 24 /9I6 



©CI,A432843 



p.\\\ 






PROTECTION OF INDUSTRIAL PROPERTY.* 
MONOPOLIES GRANTED BY GOVERNMENTS. 

"The Congress shall have power : 



"To promote the progress of Science and useful arts, by se- 
curing for limited times to authors and inventors the ex- 
clusive right to their respective writings and discoveries :" 
— Art. I, Sec. 8, Constitution of the United States. 

INDUSTRIAL PROPERTY defines the whole field of prop- 
erty rights protected by the government through monopo- 
lies granted for terms of years. The subject of the monopolies 
is industrial proporety. The monopolies are secured by govern- 
ment grants awarded on stipulated conditions. The grants 
themselves, protecting industrial property, are variously termed 
patents, trade-marks, and copyrights, which designations include 
generally variations of any one of these classes. 

It is a frequent experience of counsel engaged in the general 
practice of the law to have clients, either individual or corpo- 
rate, come to them with their vital problem of the protection of 
their industrial property. What are the remedies against com- 
mercial pirates who prey upon the industrial property of their 
competitors rather than rely upon legitimate methods of com- 
mercial competition? What exclusive privileges do the govern- 
ments extend for protection against such robbery? 

This article is designed to answer such preliminary questions. 

It is an outline of the general extent of the protection afforded 
for industrial property by this government and foreign govern- 
ments. Only the definition of the boundaries and a statement 
of the principle of the protection of industrial property will be 
touched upon; it must be left to highly trained specialists to 
carry out the actual practice of protecting this type of property. 

The answers in detail to the multitude of questions in regard 
to these matters, which will inevitably arise in the course of 
the practice of any general counsel, are outside the scope and 



*Copyrighted, 1915, by H. A. Toulmin, Jr. 



^^-/Ss 



22 



duty of the general adviser. This article will only attempt to 
furnish the broad and comprehensive view of the entire situation 
which the writer has found by frequent consultation with gen- 
eral practitioners to be of rare value to them before they find 
it necessary to resort to specialists in the particular fields in 
w^hich the questions arise. 

For the purpose of covering this extensive field of the pro- 
tection of industrial property, assume this instance of the gen- 
eral counsel of an organization being called upon to advise the 
Board of Directors of a new corporation, manufacturing a new 
product, to be marketed in the United States, the North and 
South Americas, and in other foreign lands, in regard to methods 
and means of protection open to the corporation at home and 
abroad. Further, assume that the corporation is manufacturing 
a new commodity which is a product of the combination of the 
mechanical, electrical and chemical arts, as for instance, a soap ; 
that to manufacture this commodity, a new process must be 
used ; that the commodity is marketed with the trade-mark of 
the corporation indicating the origin of the goods, and the goods 
are shipped throughout the world; assume that the box in which 
the commodity reaches the ultimate consumer bears the dis- 
tinctive labels of the firm ; that the distinctive mark of the house 
is used in the form of "prints" employed in advertising, but not 
attached to the goods directly nor to the cartons containing the 
goods ; and that books of instruction explaining the uses of the 
commodity accompany it. 

All these things are the product of the exclusive energy, genius, 

ingenuity and creative thought of the new organization made 

possible through its financial resources and the activity of its 

personnel. 

THE MANUFACTURERS' QUESTION. 

The signal question immediately arises, what, if any, part of 
this exclusive property can be taken by the corporation's com- 
petitors or by anyone of the general public? What protection 
'does the government of the United States afford, and what pro- 
'itection do foreign governments afford, for these articles of in- 
dustrial property brought into being by this corporation? Can 
•competitors imitate, and, if so, to what extent can they imitate 
'the product, its dressings, the form in which it is delivered to 
the public, the advertising, the sales methods, and even the ap- 
pearance of the article itself? 

This article is the general answer. 

— 2 — 



I. PATENTS. 

The first question which will arise will be that of patent pro- 
tection. Patents are variously divided into those known as me- 
chanical patents or patents covering machines, patents for a 
process or art of producing a particular product, patents for 
chemicals or compositions of matter, and patents for designs 
to protect in an exclusive way specific configurations of orna- 
mental character. 

To summarize the classes of patents: 

1. Mechanical, 

2. Process or art, 

3. Composition of matter (chemical), and, 

4. Design. 

Probably the machinery used in this particular corporation 
to produce the soap would be the first consideration. How can 
this machinery be protected? The procedure would be to secure 
patents on the mechanism, or mechanical patents. 

After having passed by the question of protecting the ma- 
chinery for producing a soap, then the question would arise 
whether or not the process by which the soap was made could 
be protected. In the making of soap the various machines em- 
ployed, for the patenting of which we have already provided, 
would probably be used in series, each one carrying out a co- 
related and coordinated step in the method of producing the 
final product of the finished soap. Step by step, from machine 
to machine, this process would progress, until the finished article, 
ready for consumption, was finally secured. The machines em- 
ployed in the manufacture of soap and employed in this process, 
would probably be electrically driven and would involve the 
application of heat, light, electricity, chemistry, pneumatics, hy- 
draulics, etc. Some of the operations in producing the soap 
would have to be guided or performed by hand, while others 
would be performed by machines of more or less automatic na- 
ture. The series of steps so related would be a process and, con- 
sequently, patentable. "The generic definition of the process is, 
'an operation performed by rule to produce a result.' " ^ 

The soap itself is a product of an ingenious chemical com- 
pound, we may well assume, and is, therefore, entitled to ample 
protection. A patent or patents will be granted to protect the 



1 Walker on Patents, 4th ed.„ p. 3. 

— 3 — 



corporation in its ownership of the compounds or formulae which 
represent the various combinations of material which, when 
taken together, represent the completed product. The term 
"composition of matter," is inclusive of all composite articles 
which are the union of two or more ingredients, irrespective of 
whether this union is a chemical one, a mechanical one, or 
whether the elements so combined are in the form of gases, 
liquids or solids. A composition of matter is patentable pro- 
viding, of course, that it is eligible under the rules provided for 
the granting of patents. 

The soap itself may be turned out with a certain design upon 
each cake or bar, or a specific configuration or shape which is 
both novel and ornamental. Such a design is valuable because 
it lends some artistic quality to the product, makes it attractive 
to the purchaser in the esthetic sense, and lends a certain dis- 
tinction to the manufacturer's offering to the public. A design 
patent would protect this feature. 

Design patents have been defined variously, but no definition 
is, perhaps, more apt than the definition of the Circuit Court of 
Appeals for the Second Circuit, in Howe v. Blodgett & Clapp 
Co.^ No Court of Appeals in the United States has had more 
experience or has passed with greater learning and care upon 
patent questions than that of the Second Circuit ; a definition 
from that Court is particularly helpful, and especially so in this 
case because the Court adopted the definition of Judge Town- 
send, sitting on circuit, who spoke as follows : 

''Patents for designs are intended to apply to methods or orna- 
ment, in which the utility depends upon the pleasing effect 
imparted to the eye, and not upon any new function. ^ ^ ^ 
Design patents refer to appearances, not utility. Their ob- 
ject is to encourage works of art and decoration which appeal 
to the eye, to the esthetic emotions, to the beautiful." 

Further, the structure for a design must be unitary, must be 
ornamental as opposed to the useful qualification of mechanical 
patents, and must, of course, be novel. An article cannot both 
be copyrighted and be the subject of a design patent. "The 
author or owner is driven to his election and must stand by his 
choice." ^ In the case of trade-marks, if the subject of a design 

2 112 Fed. 61. 

3 Louis De Jonge & Co. v. Brenker & Kessler Co., 182 Fed. 150. 

_4 — 



patent is identical with the subject matter covered by a trade- 
mark, the Patent Office has decided that when a certain device 
has had a design patent issued to cover it, the Office will not 
grant another registration for the same design as a trade-mark, 
because that would impair the right of the design patentee.* 
If a design patent has expired, then its subject matter may be 
registered as a trade-mark, provided, of course, that the trade- 
mark statutes are complied with.^ It has been held that ''the 
designer of articles of manufacture not otherwise entitled to 
receive design patents, cannot justify the issuance of such pat- 
ents on the theory that the design is a trade-mark." ^ 

No attempt is made in this discussion to define invention either 
inclusively or exclusively, because that is a matter for specialists 
highly trained in the technical rules of patent practice. The 
sole object of this article is to outline what protection the gov- 
ernments afford, without making any attempt to discuss the 
multitude of technical rules which govern the granting in spe- 
cific instances of particular protection. 

The corporation now has, we may assume, material for me- 
chanical patents, process patents, composition of matter pat- 
ents, and design patents, and has thus proceeded to the protec- 
tion of such property. 

GENERAL REQUIREMENTS OF PATENTS. 

A patent is an exclusive grant or monopoly awarded to an 
inventor or author in return for his making known and, there- 
fore, making available to the public, his discovery, or creation. 
This exclusive right for the specified term of years is the ex- 
clusive right to make, use and sell. The exclusive right to make, 
use and sell is the cardinal trinity, the quality of which is defined 
by the word exclusive. The patent law does not give the right 
merely to make, use and sell, because that is presumably inherent 
in the production of the article, but what the patent law does 
give is the beneficial exclusive privilege.'' 

The term of mechanical, process, and composition of matter 
or chemical patents is seventeen years of the exclusive privilege 

4 Lee & Shepard, 24 O. G. 1271. 

5 King, 46 O. G. 119. 

6 Rowe V. Blodgett, etc., Co., 112 Fed.^ 61 ; Coates et al. v. Merrick Thread 
Co., 149 U. S. 562. 

' U. S. R. S., § 4884. 

.— 5.— 



to make, use and sell the subject matter covered by the particu- 
lar patent. Different terms are provided for design patents ; 
they are granted for the varying terms of three and a half, seven 
and fourteen years, as the applicant may, in his application, 
elect.^ 

Inventions may be invented by one man or by several. If by 
one man, it is known as a sole invention ; if by more than one, 
it is known as a joint invention. Great care and caution should 
be taken before the application for the patent is filed to determine 
the exact nature of the inventorship, whether sole or joint, be- 
cause, unless this is properly determined, it may lead to a de- 
feat of the application or patent. Many corporations employ- 
ing a number of inventors amongst whom there is considerable 
rivalry have experienced a great deal of difficulty in determining 
exactly who were the inventors. It is highly essential that this 
be regarded with great care. 

As to what person may apply for and receive a patent for his 
invention or discovery, it is best to quote the language of the 
Statute, which says : 

"Any person who has invented or discovered any new and 
useful art, machine, manufacture or composition of matter, 
or any new and useful improvements thereof." ^ 

The patent may be obtained provided that the invention has 
not been known or used by others in this country before the in- 
vention or discovery thereof, and provided it has not been pat- 
ented or described in any printed publication in this or any 
foreign country, before the invention or discovery thereof, or 
more than two years prior to the filing of the application ; and 
provided, further, that the subject matter of the application has 
not been in public use or on sale in this country for more than 
two years prior to the application, unless the same is proved to 
have been abandoned. Upon this same question, it is to be ob- 
served that no person will be debarred from receiving a patent 
for his invention, nor will have his patent declared invalid, where 
the invention has been patented by him or his assignee in a 
foreign country, unless the application filed in the foreign country 
was filed more than twelve months prior to the filing of his ap- 
plication in the United States. The time of twelve months is 
shortened to four months in the case of designs.^^ 

The method of applying for a patent is to state full and clearly 

8 U. S. R. S., § 4931 ; Patent Office Rules, No. 80. 

9 U. S. R. S., § 4886. 10 u. S. R. S., § 4887. 



the exact nature of the invention in what is known as a specifica- 
tion, illustrated by proper drawings, and the exact nature of 
what the inventor believes to be his exclusive property, being 
defined by what is known as claims. Claims define the bounda- 
ries of the monopoly. No legal instrument requires more learning 
and skill to draw properly than a patent claim. The preparing 
and prosecution of an application is a matter for highly trained 
specialists. 

The question of reissue or extension frequently comes up 
through the questions of inventors or those owning inventions. 
A provision is made for reissue of a patent under certain condi- 
tions, some of which are the reissue of a patent which is inopera- 
tive or invalid by reason of a defective or insufficient specification 
or by reason of the patentee claiming more than he had a right to 
claim, provided the error has occurred by reason of inadvertence, 
accident or mistake, w^ithout any fraudulent or deceptive intent. 
It is a matter of considerable difficulty, usually, to have patents 
reissued, and when they are reissued, they frequently involve 3l 
great many technical questions, so that it is, altogether, a matter 
to be avoided, if possible. It is rare that the patent is ever re- 
issued when more than two years have elapsed. Then, too, if 
during the interval before the patent is reissued, any rights of 
other parties have intervened, that may prove a vital stumbling 
block to the securing of the new patent. Extensions are granted 
only by act of Congress, a matter too cumbersome for use except 
in the rarest cases. 

The invention and the application for the patent may be 
assigned in whole or in part, or rights under patents may be 
granted by means of a license.^^ The interests may be invested 
in assignees, in grantees of exclusive territorial rights, in 
mortgages, and, as has been pointed out, in licenses. Definitions 
of the kinds of interests so acquired by these transfers are best 
set forth in Patent Office Rule No. 196 : 

*'(1) An assignee is a transferee of the w^hole interest of the 
original patent or of an undivided part of such whole inter- 
est, extending to every portion of the United States. The 
assignment must be written or printed and duly signed. 

"(2) A grantee acquires by the grant the exclusive right, 
under the patent, to make, use, and vend, and to grant to 



1/1 U. S. R. S., §§ 4895 and 4898. 



others the right to make, use, and vend, the thing patented, 
within and throughout some specified part of the United 
States, excluding the patentee therefrom. The grant must 
be written or printed and be duly signed. 

"(3) A mortgage must be written or printed and be duly 
signed. 

"(4) A license takes an interest less than or different 
from either of the others. A license may be oral, written, 
or printed, and if written or printed, must be duly signed." 

The government requires in the way of fees, $15.00 at the 
time of filing the application and $20.00 upon allowance of the 
application. This $20.00 is payable any time within the six 
months from the date of allowance.^^ This applies to all patents 
except design patents. Fees for design patents vary with the 
term of years for which they are granted. They are, for the 
three years and six months, $10.00; seven years, $15.00; and for 
fourteen years, $30.00. On the application for reissue of a pat- 
ent, the fee is $30.00. 

At this point, it might not be out of place to caution the general 
practitioner to see that his client marks carefully, with the word 
"patented," and the day and year of the patent, machines em- 
bodying the invention covered by the patent, to identify the 
patent with the machines manufactured under it. Further, and 
perhaps more important still, great care should be used to mark 
only machines which actuall}^ embody the invention for which 
the patent is issued. False marking is a serious matter and may 
subject the person who so marks to embarrassing difificulties. 
The marking is valuable because it gives notice to the public of 
the fact that the machine, or whatever it may be, which is the 
subject of the patent, is actually patented. This acts as a warn- 
ing and is useful in case of a suit, because no specific notice is 
then necessary from which to date a recovery for the invasion of 
the monopoly. ^^ 

We have now proceeded with the protection of the business of 
the corporation we have in mind to a point where we have pat- 
ents applied for or granted which will protect the machinery, the 
process of producing the product or the art or method of produc- 
ing it, the chemical composition or union of the various elements 
which go into the making of the soap, and the design of the 
finished article itself. So much for the manufacturing end. 

12 U. S. R. S., §§ 4885 and 4934. -is U. S. R. S., §§ 4900 and 4901. 



But what of the distribution and sales end of the business, 
what of the protection against commercial pirates imitating this 
product in form, in design, in labels, in wrappings, in boxes, in 
cartons, in advertising, etc., in which and through which the 
product may become known to the general public, who have no 
means of knowing that this article is the article produced by the 
particular company except through these distinctive dressings, 
wrappings and advertising used by the company to designate its 
product. 

The means of protection of this kind of industrial property are 
found in trade-marks, labels, prints and copyrights. 

II. TRADE-MARKS. 

A trade-mark is ''the commercial substitute for one's auto- 
graph."^^ It is an arbitrary, distinctive mark or designation, 
indicating the origin and ownership of the goods to which it is 
attached or the cartons in which the goods are sold.^^ 

In this business of marketing soap, the trade-mark could be 
imipressed upon the soap itself or printed upon the wrappings 
of the soap or on the boxes containing it. It could be used in all 
these ways. It could be used in the advertising, in the trade litera- 
ture of the concern, and in all the various ways that might occur 
to the ingenious sales manager in identifying the high quality of 
his product with this distinctive mark, so that a purchaser once 
having used soap of this character which he found satisfactory 
would have a ready means of calling for the same article again 
when he needed any additional supply. 

Who may register a trade-mark? A trade-mark may be regis- 
tered by any person, firm or corporation or association domiciled 
within the territory of the United States or residing or located 
in any foreign country, which, by treaty, etc., affords a similar 
privilege to the citizens of the United States, and who is the 
owner of such trade-mark and uses it in commerce with foreign 
countries or in interstate commerce.^^. Further, the owner of a 
trade-mark residing or located in a foreign country but having a 
manufacturing establishment within the United States may regis- 
ter his mark for the products of such establishment upon com- 
plying with the proper provisions of the law.^" 

14 Leidersdorf v. Flint, Fed. Cas. No. 8219. 

15 Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U. S. 446 ; Elgin 
National Watch Co. v. Illinois, etc., Co., 179 U. S. 665. 

16 Act of Feb. 20, 1905, §§ 1 and 29. i^ Act of May 4, 1906, § 3. 

_9 — 



What may be registered as a trade-mark? A trade-mark must 
be a distinctive device, word or phrase of identification, arbitrary 
in character and not merely descriptive of the goods to which it 
is attached. It must not be of improper character, nor consist of 
or comprise the flag of the United States or any of the emblems 
of the political sub-divisions thereof or of any foreign nation, 
nor the emblem of any fraternal society unless in the last case 
proof of prior adoption can be shown to the satisfaction of the 
Commissioner of Patents. The trade-mark must not be regis- 
tered or a nonregistered trade-mark owned and in use by another 
and appropriated to merchandise of the same descriptive proper- 
ties as that of the applicant, because, if the trade-mark were 
granted to the applicant, it would be likely to cause confusion 
or mistake in the minds of the public or deceive purchasers. The 
mere name of an individual, firm, corporation or association 
which is not printed or written, impressed or woven in some 
particular manner or in association with the portrait of an indi- 
vidual, is not eligible to registration. Geographical terms can- 
not be registered. Portraits of living individuals cannot be 
registered as trade-marks except on the written consent of such 
individuals.^^ 

The trade-mark is registered by the filing of an application 
accompanied by five specimens of the mark as it is actually ap- 
plied to the goods, and a drawing showing the mark. The appli- 
cation must state, amongst other things, the particular class of 
goods upon which the mark is to be applied. The U. S. Patent 
Ofiice has divided all products into fifty classes. Then the par- 
ticular kind of merchandise in that particular class must be set 
forth, with a statement as to how the mark is applied and afiixed 
to the goods, and the length of time during which the trade-mark 
has been used upon the goods. The trade-mark must, of course, 
have been used in interstate commerce.^^ 

Upon the allowance of the application, the mark will be pub- 
lished at least once in the Official Gazette issued by the Patent 
Office, and the publication shall be at least thirty days prior to 
the date of registration. If no one files a notice of opposition 
within thirty days after the publication, then a certificate of regis- 
tration will be issued.^^ This opposition, if made, would consist 

18 Act of Feb. 20, 1905, § 5; and the Act of March 2, 1907, § 5; Act of Feb. 
18, 1911, § 5. 

19 Act of Feb. 20, 1905, § 2; Act of Feb. 18, 1909, § 2. 

— 10 — 



in the filing of a statement showing that the mark did not belong 
to the person who was applying for registration of it, or that the 
mark was so similar to the opposer's mark that it would cause 
confusion in the minds of the public, etc. 

The term for which the exclusive right to the mark is granted 
is twenty years, except in the case of trade-marks previously 
registered in a foreign country, in which case the protection ceases 
on the same day on which the trade-mark ceases to be protected 
in the foreign cotmtry. Certificates of registration may be re- 
newed from time to time for periods of twenty years upon the 
payment of renewal fees.-^ 

Even though a trade-mark may not be technically a trade-mark 
and, therefore, not registrable in the U. S. Patent Office, yet if 
that trade-mark was in use for ten years or more prior to Feb. 
20th, 1905, then that mark can be registered irrespective of its 
failure to comply with the technical requirements of the trade- 
mark law.^^ 

The fees are $10.00 for filing an original application, and 
$10.00 for filing a renewal. 

A number of states in the United States provide for registra- 
tion of trade-marks. This state registration is comparatively in- 
expensive, and is of value because a registration in leading states 
like New York, Pennsylvania, Ohio, Illinois, etc., would prevent 
any infringer from using the same mark, because he would not 
be able to distribute the goods under that infringing mark in those 
states in which his commercial possibilities would be large. By 
using the state registration, even though in a few of the states, 
it is sufficient to break up any practical commercial plans of the 
infringer. 

These trade-marks can only be assigned when the businesses 
which they identify are assigned. They cannot be assigned 
separately. The reason is apparent, because the vital point of 
the whole matter is that the trade-mark shall identify the business 
and is inseparable from it. 

A very efficient form of protection in certain instances is the 
registration of the mark through the Treasury Department of the 
United States Government. It is provided that no article which 
shall bear a copy or simulation of a trade-mark registered in ac- 



20 Act of Feb. 20, 1905, § 6. 

21 Act of Feb. 20, 1905, § 12. 

22 Act of Feb. 20, 1905 (as amended Jan. 8, 1913), § 5 (b), 

— 11 — 



cordance with the provisions of the law in the United States, or 
an article which is manufactured in any foreign country 'or lo- 
cality other than that in which it is in fact manufactured, shall be 
admitted to an entry at any customshouse of the United States. 
In order to aid the officers of customs to enforce this prohibition, 
any domestic manufacturer or trader or any foreign manufacturer 
or trader entitled to protection by a treaty, etc., can have a copy 
of the certificate of registration of his trade-mark recorded in the 
books of the Department of the Treasury. Facsimiles of the mark 
are to be furnished to the Secretary of the Treasury, which 
copies will be distributed to the customshouses or proper officers 
in the various ports of entry of this country. This has a practical 
meaning, in that it prevents the importation into this country of 
inferior articles of manufacture by outsiders who cannot be 
reached for infringement of the trade-mark under which they 
are shipping the goods into this country and deceiving the pub- 
lic by the unauthorized use of a domestic trade-mark or a simu- 
lation of it.^^ 

The trade-mark must be marked by a notice of registration in 
the U. S. Patent Office. The same rule in regard to notice and 
its advantages applies to trade-marks as to patents.^^ 

III. LABELS. 

A label is a special form of designation identifying the product, 
and usually bears the name of the article and of the maker or 
seller, with the address ; and sometimes directions for the use 
thereof. The label must be suggestive of its relations to the 
article to which it is attached or connected. 

This is a wise requirement in view of the fact that it must be 
impressed or stamped directly on the article or upon its con- 
tainer. This fact is the essence of its character. The fee for re- 
cording is $6.00 ; there is no final fee. 

The term of exclusive protection shall be twenty-eight years 
with the privilege of renewal.^^ 

IV. PRINTS. 

A print is ''an artistic representation or intellectual production 
not borne by an article of manufacture or vendible commodity, 

23 Act of Feb. 20, 1905, § 27. 24 Act of 1905, § 28. 

2-"> Act of June 18, 1874; and Act of March 4, 1909. 

— 12 — 



but in some fashion pertaining thereto, such, for instance, as an 
advertisement thereof." ^^ The print is used as a decorative erii- 
blem or artistic representation which the company will employ 
upon its advertising, in its trade literature, in its circulars, and 
in its publications which describe its product and its use. It 
must refer to the article which it advertises, although it need not 
be attached to it. Like the label, it is related to the copyright 
law, and like the label is copyrightable. The term of registra- 
tion of a print is twenty-eight years, and the fee for filing an ap- 
plication is the same as that of the label. The print and label 
are registered in the Patent Office even though the act pertai^i- 
ing to them is a part of the old copyright law. The print is pri- 
marily an artistic representation, and is distinguished from the 
label by not being borne by the article of manufacture or its 
container as the label would be. It is used in the advertisement 
of the article primarily. Its purpose is to protect the public in 
its purchase by advertisement in connection with goods of ac- 
knowledged standard. It must not be connected absolutely 
with the fine arts, for then it would be subject to copyright only, 
but it must have some artistic quality as well as a commercial 
character.^" Both prints and labels may be assigned by an in- 
strumeilt in writing signed by the proprietor. Either an indi- 
vidual, a firm or a corporation or the representatives of such 
applicants can apply for registration of the print or label. 

V. COPYRIGHTS. 

The copyright act gives to the author the exclusive right to 
print, reprint, publish, copy, and vend his copyrighted work for 
the period of tw^enty-eight years with renewal privilege for sim< 
ilar periods. 

The particular interest of copyright in our illustration is the 
copyright of the manuals of instruction, or the books of descrip- 
tion of various uses of the soap. The literature of the corpora- 
tion may consist of booklets or pamphlets describing the process 
by which the soap is made, or the particular factory in which it is 
made, or any other matter of interest which the corporation may 
desire to put before the public. These booklets, pamphlets, etc., 
can be copyrighted. Any photographs, prints and pictorial illus- 
trations can be copyrighted. Likewise, as is becoming the modern 

26- Ex parte Bowles, 97 O. G. 2308. 

27 Act of June 18, 1874; and Act of March 4, 1909. 

— 13 — 



custom amongst large corporations, moving pictures of scenes 
about the plant or of the process of its manufacture are being 
taken. These moving pictures can be copyrighted as well as mo- 
tion picture photo-plays which are taken in and about the plant; 
they are now largely used for advertising commercial institu- 
tions. Likewise, drawings or plastic work of a scientific charac- 
ter, works of art, models or designs of works of art, and repro- 
ductions of works of art can be protected.^^ 

Under the Act of 1909, the method of securing copyrights is 
as follows : The publication has placed upon it the notice of 
copyright, giving the word copyright, or some similar designa- 
tion, followed by the year and the name of the copyright pro- 
prietor. The book or pamphlet is published; this initiates the 
copyright. Then the application for copyright is filed, giving 
the date of publication and other pertinent matters required. 
Then the certificate of registration for the copyright will issue. 
The Act of 1909 is peculiar in that the copyright notice is placed 
upon the book, etc., and the book is distributed to the public be- 
fore the registration is actually granted. 

FOREIGN PROTECTION. 

We now come to the problem of the corporation distributing 
its goods in foreign countries. 

It is unwise for any corporation which has a product worthy 
of its name to distribute its product in foreign countries unless 
it has some measure of patent or trade-mark, or possibly copy- 
right protection, or all of them, if possible, provided, of course, 
it is permissible to secure such protection. When it is possible, 
it is poor business judgment not to secure such protection in the 
countries into which the products will go. This is true for two 
reasons : first, because of the monopolistic protection afforded 
which can be enforced by legal means; and, second, because of 
the monopolistic protection aftorded by the warning notice of 
registration, which is in effect, a moral means. The latter has 
been found, in many cases, to be most effective to deter un- 
scrupulous individuals from appropriating the property of those 
to whom it rightfully belongs, but who are located at a distance 
from the point of distribution in the foreign country. 

Foreign patents can be obtained generally under the Inter- 
national Convention. The rule which will interest the general 



28 Act of March 4, 1909. 
-2 



— 14 



practitioner is simply that the question of foreign patents should 
be taken up at once upon the filing of the applications for patents 
in the United States. The question can then be disposed of 
with safety to the client and with opportunity to comply with 
the provisions of the foreign laws and international agreements. 
No attempt will be made here to go into the technicalities of 
this procedure. 

Particularly necessary is the registration of trade-marks in 
foreign countries, because goods are so largely bought in those 
countries by reason of distinctive marks. The mark is particu- 
larly effective in use in Latin and Oriental lands by reason of 
the turn of mind of those peoples. The mark adopted should be 
designed so that it will be readily pronounceable or useable in 
foreign countries in which a language other than English is 
spoken. In some cases the trade-mark has to be registered in 
the United States first before it can be registered in foreign 
countries ; in other cases this is not necessary. The provisions 
of foreign laws are very technical and require a thorough knowl- 
edge of local conditions to understand and interpret them. 
Various requirements for legalizations, actions of certain consuls, 
etc., make the matter one of great care. Manufacturers from 
time to time are misled into signing powers of attorney in foreign 
languages which bring great disaster upon them because the 
powers confer a degree of authority which the manufacturer 
would not consent to if he had understood the language of the 
power. The rule in many countries, principally in South Ameri- 
can countries, is that the first to register a mark is the owner 
and can keep all others from using that mark. In the United 
States the rule is to the contrary, namely, that the registration 
of the mark is only prima facie evidence of ownership, and if the 
real owner can prove his prior title to the mark, he can defeat 
the registration and exert his exclusive right to it. 

This foreign rule works to the great loss of many manufac- 
turers who send their goods into foreign countries, if they have 
not registered their mark, because some enterprising commer- 
cial pirate, as is frequently the case, seeing the prospects of the 
concern coming into that country, registers the mark in his own 
name before the -goods are sold in that particular locality. The 
pirate gambles on the chance of holding up the manufacturer 
when he starts to distribute his goods, because usually a pen- 
alty in the shape of a fine, or even imprisonment, is attached 
to sending goods into a country under a mark which belongs to 

— 15 — 



another. The pirate, having secured registration of the mark 
belonging to the American manufacturer, awaits his opportunity 
when the manufacturer imports the goods. The goods having 
been shipped into that country, the manufacturer is confronted 
with the fact that his mark is owned by another in a technical 
sense, and in a sense which will be enforced by the laws in that 
foreign country. He either has to use a new mark or buy off 
the man who has perpetrated what is a moral fraud. This has 
been the actual experience of a number of manufacturers. 

The conclusion to be reached in this foreign matter is that if 
the manufacturer is going into foreign fields, or has prospects 
of going into foreign fields, he should look to his foreign pro- 
tection in the early stages of the business. 

The foregoing discussion outlines the various forms of protec- 
tion which a corporation or an individual or a partnership engag- 
ing in business involving industrial property may secure. The 
monopolies frequently grow to great values. The wise pro- 
vision of the United States Statutes for the protection of indus- 
trial property has been the cornerstone for the building of our 
industrial and commercial prosperity. The provisions of these 
laws are such as to encourage the creation and invention and 
discovery of things useful to the public, which are granted the 
protection of temporary monopolies in favor of the inventor or 
owner or discoverer, in return for the corresponding benefit that 
the disclosure confers upon the public. In the United States 
there are no working provisions, no compulsory license systems, 
no annual taxes or other burdens which are frequent and al- 
most universal in foreign countries. In this lies a part of the 
explanation of our great activity in the field of industrial property 
and our signal leadership in the creation of remarkable ma- 
chinery, chemical compounds, and ingenious devices generally 
which have so widely benefited humanity, and in our literary 
and artistic creations as well. 

H. A. Toidmin, Jr. 
Dayton, Ohio. 



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